Patent Bar Examination (USPTO Registration Exam) Patentability: Substantive Conditions Flashcards

24 sample cards from the Patentability: Substantive Conditions deck

Sampled from the end of the deck, so these are different cards from the ones shown on the syllabus page.

1. What two conditions trigger the on-sale bar under pre-AIA 102(b) (Pfaff v. Wells)?

   (1) The invention was the subject of a commercial offer for sale, and (2) the invention was ready for patenting (either reduced to practice or shown in drawings/descriptions enabling one skilled in the art to practice it), more than one year before filing.

2. What is pre-AIA 35 U.S.C. 102(c) (abandonment)?

   An applicant loses the right to a patent if the inventor has abandoned the invention—i.e., intentionally and deliberately surrendered, given up, or relinquished it (intent, express or inferred from conduct).

3. What is pre-AIA 35 U.S.C. 102(f) (derivation)?

   A person is not entitled to a patent if he did not himself invent the subject matter—i.e., he derived the invention from another. The applicant must be the true inventor.

4. What is a Rule 1.131 affidavit (declaration) used for?

   To 'swear behind' a prior-art reference by establishing the applicant's invention date is earlier than the effective date of the reference, thereby removing the reference (available only in pre-AIA cases).

5. When can a Rule 1.131 affidavit NOT be used to overcome a reference?

   It cannot overcome a statutory bar under 102(b), a reference that claims the same patentable invention (interference situation—must use 1.131(c) or interference), or in AIA first-to-file cases where invention date is irrelevant.

6. What must a Rule 1.131 declaration show to antedate a reference?

   Either (1) reduction to practice before the reference's effective date, or (2) conception before that date coupled with due diligence from just before the reference date to a later reduction to practice (actual or constructive).

7. What are the four Graham v. John Deere factual inquiries for obviousness?

   (1) Scope and content of the prior art; (2) Differences between the prior art and the claims; (3) Level of ordinary skill in the art; and (4) Secondary considerations (objective indicia) of nonobviousness.

8. What is the legal test for obviousness under 35 U.S.C. 103?

   A patent may not be obtained if the differences between the claimed invention and the prior art are such that the invention as a whole would have been obvious, at the time of invention (pre-AIA) or before the effective filing date (AIA), to a person having ordinary skill in the art (PHOSITA).

9. What did KSR v. Teleflex hold regarding the teaching-suggestion-motivation (TSM) test?

   KSR held the TSM test cannot be applied rigidly; obviousness analysis must be flexible. A combination of known elements yielding predictable results may be obvious, and any need or market pressure plus a finite number of identified solutions can render an invention obvious to try.

10. Name several KSR rationales the USPTO can use to support an obviousness rejection.

    (1) Combining prior-art elements per known methods for predictable results; (2) Simple substitution of one known element for another; (3) Use of a known technique to improve similar devices; (4) Applying a known technique to a known device ready for improvement; (5) 'Obvious to try' from a finite number of predictable solutions; (6) Known work in one field prompting variations based on design incentives; (7) Some teaching, suggestion, or motivation (TSM).

11. What are the recognized objective indicia (secondary considerations) of nonobviousness?

    Commercial success, long-felt but unmet need, failure of others, copying by others, unexpected results, industry praise/skepticism, and licensing of the invention.

12. What is the 'nexus' requirement for secondary considerations of nonobviousness?

    There must be a nexus—a factual connection—between the objective evidence (e.g., commercial success) and the claimed invention's merits, not features in the prior art or factors like advertising or market power.

13. What is a Rule 1.132 declaration used for?

    To submit evidence (e.g., affidavits/declarations of facts or expert opinion) traversing a rejection or objection—commonly to show unexpected results, commercial success, or other secondary considerations to rebut an obviousness rejection, or to rebut a prima facie case.

14. To rebut obviousness with 'unexpected results' via a Rule 1.132 declaration, what must the evidence show?

    The claimed invention produces results that are unexpected (a difference in kind or a significant difference in degree) compared to the closest prior art, and the showing must be commensurate in scope with the claims.

15. What is the difference between anticipation (102) and obviousness (103)?

    Anticipation requires a single reference disclosing every claim element (lack of novelty). Obviousness can combine multiple references or use one reference plus the knowledge of a PHOSITA, asking whether differences would have been obvious.

16. What does 'analogous art' mean in an obviousness analysis?

    A reference is analogous if it is (1) from the same field of endeavor as the claimed invention, or (2) reasonably pertinent to the particular problem the inventor faced. Only analogous art can be used in a 103 rejection.

17. Under the AIA, what is the significance of the phrase 'or otherwise available to the public' in 102(a)(1)?

    It is a catch-all category making any public disclosure prior art, and (per the USPTO's view) it frames the preceding categories so that public availability is the touchstone for prior art.

18. What is a 'printed publication' for prior-art purposes?

    A reference that has been disseminated or otherwise made sufficiently accessible to the interested public (persons of ordinary skill) before the critical/effective date; 'printed' includes electronic and online materials if publicly accessible.

19. What is the difference between actual and constructive reduction to practice?

    Actual reduction to practice = building/testing an embodiment that works for its intended purpose. Constructive reduction to practice = filing a patent application that meets 35 U.S.C. 112(a) for the claimed invention.

20. How does the AIA's definition of prior art differ from pre-AIA regarding the inventor's own activities?

    Pre-AIA gave a one-year grace period before the filing date for the inventor's own publication/use/sale. The AIA shifts the focus to the effective filing date and provides a narrower grace period only for disclosures by or derived from the inventor under 102(b)(1).

21. What is the 'ready for patenting' prong and how can it be satisfied?

    Part of the on-sale bar (Pfaff), satisfied either by (1) actual reduction to practice before the critical date, or (2) drawings or descriptions sufficiently specific to enable a person skilled in the art to practice the invention.

22. In an obviousness rejection, why must the examiner provide an articulated reasoning with rational underpinning?

    Per KSR, the examiner must explicitly state the reason (rationale) why a PHOSITA would have combined or modified the references; conclusory statements are insufficient to establish a prima facie case of obviousness.

23. What is the role of a terminal disclaimer's common-ownership requirement?

    A terminal disclaimer overcoming obviousness-type double patenting must include a provision that the later patent is enforceable only so long as it and the reference patent are commonly owned, preventing separate assertion by different parties.

24. Can secondary considerations (objective indicia) overcome a strong prima facie case of obviousness?

    Yes. Objective indicia must always be considered when present and, with an established nexus, can outweigh a prima facie case—the totality of the Graham factors must be reweighed before reaching a conclusion of obviousness.

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Patentability: Substantive Conditions flashcards FAQ